IP: Supreme Court applies first-sale doctrine internationally

The high court’s decision will prevent a “parade of horribles”

Recently an unusual collection of amici argued that the Supreme Court should not allow copyright owners to prevent U.S. resale of works authorized for sale by the copyright owner in a foreign country because it would be impractical and would exceed the proper scope of protection provided by statute. The court agreed and held in Kirtsaeng v. John Wiley & Sons, Inc. that the first-sale doctrine allows the owner of a particular copy of a work that was lawfully made anywhere in the world to sell or otherwise dispose of that copy.

The plaintiff, academic textbook publisher John Wiley & Sons Inc., authorizes publication of a foreign edition of its English language textbooks that include an express authorization for sale of that edition in Europe, Asia, Africa and the Middle East only and prohibits export out of those territories. Wiley sells the U.S. editions of its textbooks at a higher price than the foreign editions. The defendant, Supap Kirtsaeng, received copies of one of Wiley’s foreign editions from family and friends who purchased the books in Thailand. He resold them on eBay while he was studying math in the U.S. Wiley filed a copyright infringement action.

Contributing Author

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Julianne Hartzell

Julianne M. Hartzell is a litigation partner at Marshall, Gerstein & Borun LLP. She has litigated patent, trademark, copyright, and trade secret matters in...

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